Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 1 of 15
`Case 1:19-cv-11586—IT Document 72-10 Filed 06/05/20 Page 1 of 15
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`EXHIBIT J
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`EXHIBIT J
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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 2 of 15
`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
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`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`12/211,033
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`09/15/2008
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`RogerJ. Quy
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`00125/002005
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`7693
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`12/29/2009
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`7590
`27774
`MA YER & WILLIAMS PC
`251 NORTH A VENUE WEST
`2NDFLOOR
`WESTFIELD, NJ 07090
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`EXAMINER
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`ASTORINO, MICHAEL C
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`ART UNIT
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`PAPER NUMBER
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`3769
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`MAIL DATE
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`DELIVERY MODE
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`12/29/2009
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 3 of 15
`Application No.
`Applicant(s)
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`Office Action Summary
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`12/211,033
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`Examiner
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`QUY, ROGER J.
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`Art Unit
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`3769
`Michael C. Astorino
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)[8J Responsive to communication(s) filed on 8/4/09.
`2a)0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)[8J Claim(s) 1-18 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 1-18 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17 .2(a)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) 0 Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) [8J Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 8/4/09 & 5/11/09.
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`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
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`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mail Date 20091129
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 4 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page2
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`DETAILED ACTION
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`The Examiner acknowledges the response filed August 4, 2009, wherein claims 1-18 are
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`pending. For the record claims 14 and 15 are claims with a separate statutory class from method
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`claims 1 and 8. The fact that claims 14 and 15 refer back, or reference claim 1 does not make
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`claims 14 and 15 dependent claims. As such there are four independent claims and fourteen
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`dependent claims pending in this application.
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`Information Disclosure Statement
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`The information disclosure statement filed August 4, 2009 complies with the provisions
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`of 37 CFR 1.97, 1.98 and MPEP § 609. It has been placed in the application file, the examiner's
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`initials have been provided for each citation, the document has been signed and dated, and the
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`information referred to therein has been considered as to the merits.
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`The information disclosure statement filed May 11, 2009 fails to comply with 3 7 CFR
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`1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent
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`literature publication or that portion which caused it to be listed; and all other information or that
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`portion which caused it to be listed. It has been placed in the application file, but the information
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`referred to therein has not been considered.
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`Claim Rejections- 35 USC§ 101
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`35 U.S.C. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
`any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 5 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 3
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`Claims 8-15 are rejected under 35 U.S.C. 101 because the claims recite a computer
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`readable medium. The phrase "computer readable medium" was never explicitly defined in the
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`specification.
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`Computer readable medium includes many possibilities including volatile and nonvolatile
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`media, removable and non-removable media, which further could include RAM, ROM,
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`EEPROM, flash memory or other memory technology, CD-ROM, digital versatile disks (DVD)
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`or other optical storage, magnetic based storage or any other medium which can be used to store
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`desired information and computer readable instructions, data structures, program modules or
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`other data in a modulated data signal such as a carrier wave or other transport mechanism and
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`includes any information delivery media. The term "modulated data signal" means a signal that
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`has one or more of its characteristics set of changed in such a manner as to encode information in
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`the signal. By way of example, and not limitation, communication media includes wired media
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`such as wired network or direct-wired connection, and wireless media such as acoustic, RF,
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`infrared and other wireless media. Evidence of the examiner's position regarding the broadest
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`reasonable interpretation of the phrase machine readable medium is provided in Mitchell et al.
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`US 2005/0235345 paragraphs [0020] and [0021].
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`A computer readable medium including a carrier wave is abstract idea having no practical
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`application and as such is non-eligible subject matter.
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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 6 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page4
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`Claim Objections
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`Claim 15 is objected to because of the following informalities: in line 1 there is an extra
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`space between "medium" and the comma. The examiner suggestion removing the extra
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`character space from the claim to read, e.g. "medium,". Appropriate correction is required.
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`Claim Rejections- 35 USC§ 112
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
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`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
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`Claims 1-18 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which applicant
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`regards as the invention.
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`In regards to claims 1 and 8, the examiner cannot discern based on the specification the
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`distinction between "physiological data" and "data indicating an amount of exercise performed"
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`because the data overlaps, and as such the examiner cannot discern if two types of data is
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`required or one type of data is required. For example, calories-burned while exercising is
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`physiological data and data indicating an amount of exercise performed. As such one type of
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`data, "calories-burned" would cover two categories "physiological data" and "data indicating an
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`amount of exercise performed".
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`Applicant states, "[p ]hysiological information is clear from the specification at, e.g.,
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`paragraph [0018] as describing devices that 'monitor the physiologic status of a healthy subject'
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`and data indicating an amount of exercise performed is described in the specification at, e.g.,
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`paragraph [0044]." "Physiological information" is assumed to be synonymous with
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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 7 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 5
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`physiological data. More importantly it is incorrect to suggest that physiological data or
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`information comes from a device. Physiological information can be received from person, a
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`person can measure there heart rate with there fingers lightly pressed against the carotid artery
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`and a clock. The only device is the clock, but a clock is not sufficient by itself to measure heart
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`rate such that it is physiological information or data. However, it is acceptable to assert
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`physiological information is a "physiologic status of a healthy subject". For example, calories
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`expended while exercising is a type of physiological status/measurement of a healthy subject, but
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`calories expended is also an amount of exercise performed.
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`Applicant relies on paragraph [0044] to support an argument of definiteness. However,
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`paragraph [0044] merely states that "[0044] In a healthy lifestyle management embodiment, an
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`HMD may be an exercise machine, including treadmills, rowers, steppers, exercise cycles, or
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`other aerobic or anaerobic exercisers, or a monitor, include monitors for temperature, heart rate,
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`blood pressure, amount of work or rate of work peiformed, etc." ( emphasis added). The
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`Applicant's assertion that this paragraph clears an otherwise murky issue is incredulous because
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`it merely re-states the claimed limitation.
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`In conclusion the limitation directed to receiving "physiological data" and "data
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`indicating an amount of exercise performed" is indefinite. The limitation appears to overlap in
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`scope and as such the examiner cannot discern if two types of data are required or one type of
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`data is required under the broadest reasonable interpretation of the claimed invention.
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`Additionally, claims 14-15 which refer back to claims 1 and 8, and dependent claims 2-7,
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`and 9-13 are rejected because they are refer back to or depend on a rejected claim.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 8 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 6
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`Claim 17 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for
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`failing to particularly point out and distinctly claim the subject matter which applicant regards as
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`the invention. In claim 17, the applicant uses trademark, "Bluetooth®" in the claim. See below,
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`MPEP § 2173.0S(u). " ... A trademark or trade name does not identify or describe the goods
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`associated with the trademark or trade name ... ". The examiner suggests removing
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`"Bluetooth®", amending the claim to state "short-range wireless transmission" 1 . For
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`examination purposes claim 17 will be examined as if it stated "short-range wireless
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`transmission".
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`2173.0S(u) Trademarks or Trade Names in a Claim
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`The presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. 112, second
`paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the
`claim. It is important to recognize that a trademark or trade name is used to identify a source of goods,
`and not the goods themselves. Thus a trademark or trade name does not identify or describe the goods
`associated with the trademark or trade name. See definitions of trademark and trade name in MPEP §
`608.0l(v). A list of some trademarks is found in Appendix I. If the trademark or trade name is used in a
`claim as a limitation to identify or describe a particular material or product, the claim does not comply
`with the requirements of the 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd.
`App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to
`identify any particular material or product. In fact, the value of a trademark would be lost to the extent
`that it became descriptive of a product, rather than used as an identification of a source or origin of a
`product. Thus, the use of a trademark or trade name in a claim to identify or describe a material or product
`would not only render a claim indefinite, but would also constitute an improper use of the trademark or
`trade name. If a trademark or trade name appears in a claim and is not intended as a limitation in the
`claim, the question of why it is in the claim should be addressed. Does its presence in the claim cause
`confusion as to the scope of the claim? If so, the claim should be rejected under 35 U.S.C. 112, second
`paragraph.
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`Note to Applicant Regarding Claim Interpretation
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`Each of the following items are directed to descriptive material that is nonfunctional
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`descriptive material because the broadest reasonable interpretation is that the claims are merely
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`1 Using Short-range wireless transmission is a suggestion that if the Applicant decides to use should be reviewed for
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 9 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 7
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`instructions that are not given patentable weight. See MPEP 2106.01. In regards to claims 8-15
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`"computer readable medium" because the computer readable medium can be a carrier wave with
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`instructions which does not have a structural component.
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`Claim Rejections - 35 USC§ 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`Claims 1-18 are rejected under 35 U.S.C. 102(b) as being anticipated by Brown US
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`Patent Number 5,997,476.
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`Brown teaches the use of a remote apparatus (26/28) with a communication network (24,
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`Internet) workstation (20) to remotely monitor a patient/user, (figure 1). The remote apparatus is
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`disclosed as being on a cellular/wireless network, i.e. a cellular/wireless phone ( column 4, lines
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`36-63). The remote apparatus includes many different types of monitoring devices including
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`weight scales and heart rate/pulse rate (column 5, lines 3-6) with an RS-232 connection (column
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`6, lines 44-46). Brown's remote apparatus further includes a keyboard/buttons to input data
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`regarding how people feel (see fig. 7).
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`As stated above in regards to claims 8-15 the phrase "computer readable medium"
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`computer readable medium can be a carrier wave which does not have a structural component
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`compliance under 35 U.S.C. 112 first paragraph for written description issues, i.e. "new matter."
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 10 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 8
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`and as such lacks patentable weight. The remainder of the structural limitations in the claims is
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`anticipated by Brown.
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`See Response to Arguments section below for further details of the rejection.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy ( a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
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`harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Langi, 759 F.2d 887,225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686
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`F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
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`1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to
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`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
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`provided the conflicting application or patent is shown to be commonly owned with this
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`application. See 37 CFR 1.130(b).
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`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
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`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 3 7
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`CFR 3.73(b).
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`Claims 1-12 are rejected under the judicially created doctrine of obviousness-type double
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`patenting as being unpatentable over claims 3-6, and 33-43 of U.S. Patent No. 6,602,191.
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`Although the conflicting claims are not identical, they are not patentably distinct from each other
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 11 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 9
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`because it would have been obvious to one of ordinary skill in the art at the time of the invention
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`to implement the method of the patent in the manner set forth in the instant application since the
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`claims of the instant application are merely different renditions of the patented method and
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`computer readable medium.
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`The Applicant is invited to explain, to make the record clear, reasons that the double
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`patenting rejection does not apply.
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`Response to Arguments
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`Applicant's arguments filed August 4, 2009 have been fully considered but they are not
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`persuasive.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 12 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 10
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`In regards to rejections under 35 U.S.C. 112, the Examiner disagrees with the Applicant
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`that the amended claims are now in compliance. The Examiner has provided a detailed and
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`updated rejection above on the newly amended claims.
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`In regards to rejections under 35 U.S.C. 102, the Examiner disagrees with the Applicant
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`that the rejection should be withdrawn. The Examiner has thoroughly reviewed the Applicant
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`response, and paraphrased and responded to the major arguments presented by the Applicant
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`below:
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`1. Brown notably fails to disclose any substantial teaching of how to take patient
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`monitoring "into the field", i.e. to make it work wherever the patient is as long as there is a
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`standard wireless connection.
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`Examiner Response: Applicant never claimed the use of a wireless connection to perform
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`any step of the method. As such even if the Examiner were to concede the Brown does not teach
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`a wireless connection, which the Examiner does not concede, a wired connection still rejects
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`properly the broadest reasonable interpretation of the claimed invention. The Applicant actually
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`admits such a fact in claim 4 wherein the reception of exercised-related data occurs via a wired
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`connection. Albeit claim 17, includes more specifics regarding the wireless connection, claim 17
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`is dependent on claim 4. And in rejecting claim 4 the examiner merely has to reject the wired
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`alternative to then also reject claim 17 because the more specific wireless requirements to the
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`wireless alternative do not affect the wired alternative.
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`2. Brown lacks the use of a web-enabled wireless phone.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 13 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 11
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`Examiner Response: the broadest reasonable interpretation of a web-enabled wireless
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`phone is taught by Brown in column 4, lines 35-63.
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`3. Brown lacks "data indicating an amount of exercise performed".
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`Examiner Response: Brown disclosure is sufficient to reject the broadest reasonable
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`interpretation of using data indicating an amount of exercise performed. A 60 year old user of
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`the Brown device can reaching a maximum heart rate such as 160 bpm would be sufficient to
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`reject the claim because the 60 year old user exercised an amount necessary to raise his heart rate
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`to the maximum level. On a side note the claims never required the use of a bike, or a
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`measurement of distance miles traveled.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 14 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`4. Brown lacks the use of a server calculation.
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`Page 12
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`The specification states in paragraph [0072] that "[t]he term "calculate" is also used
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`generally, and may entail a simple calculation as well as a complex one. A result may, e.g., be
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`the result of a calculation." The broadest reasonable interpretation of the Applicant's definition
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`of a calculation being a result is sufficiently rejected by a new script from the Brown server.
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`Regarding the double patenting rejection the broadest reasonable interpretation of claims
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`in this application is merely a different rendition of the claims in the patent.
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`The Applicant is invited to request an interview to discuss suggestions to overcome the
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`applied prior art.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Michael C. Astorino whose telephone number is (571)272-4723.
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`The examiner can normally be reached on Monday-Friday, 8:30AM to 3:30PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Henry Johnson can be reached on 571-272-4726. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Case 1:19-cv-11586-IT Document 72-10 Filed 06/05/20 Page 15 of 15
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 13
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Michael C. Astorino/
`Primary Examiner, Art Unit 3769
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`December 22, 2009
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`